Topek v. W.H. Silverstein 12-CV-494-SM 3/20/14 UNITED STATES DISTRICT COURT

DISTRICT OF NEW HAMPSHIRE

Topek, LLC, Plaintiff

v. Case No. 12-cv-494-SM Opinion No. 2014 DNH 060

W.H. Silverstein, Inc., Defendant

O R D E R

Topek, LLC, brings this action against W.H. Silverstein,

Inc. for trademark infringement, unfair competition, and false

designation of origin under the Lanham Act. It also brings state

common law and statutory claims for unfair competition and

deceptive trade practices, over which it asks the court to

exercise supplemental jurisdiction. It seeks compensatory

damages, as well as declaratory and injunctive relief. In

response, Silverstein has filed counterclaims for false

advertising under the Lanham Act and unfair competition under New

Hampshire's Consumer Protection Act.

Pending before the court are the following motions: Topek's

Motion to Amend the First Amended Complaint (document no. 32);

Silverstein's Motion for Judgment on the Pleadings as to

Previously Settled or Determined Claims (document no. 22);

Silverstein's Motion for Partial Summary Judgment (document no.

33); and Silverstein's Motion for Preliminary Injunction

(document no. 31).

As a preliminary matter, the court addresses Topek's motion

to amend its complaint. Such motions are liberally granted in

the absence of undue prejudice to opposing parties, unless they

are likely to result in undue delay or are the product of bad

faith. See generally Fed. R. Civ. P. 15(a). Silverstein's

objection fails to identify grounds warranting denial of Topek's

motion. Accordingly, for the foregoing reasons, as well as those

set forth in Topek's memoranda (document nos. 32 and 55), the

motion to amend the amended complaint is granted.

Standard of Review

A motion for judgment on the pleadings is subject to the

same standard of review applicable to a motion to dismiss under

Federal Rule of Civil Procedure 12(b) (6). See Portugues-Santana

v. Rekomdiv Int'l, Inc., 725 F.3d 17, 25 (1st Cir. 2013).

Accordingly, the court must accept as true all well-pleaded facts

in Topek's complaint and indulge all reasonable inferences in

Topek's favor. See SEC v. Tambone, 597 F.3d 436, 441 (1st Cir.

2010). To survive Silverstein's motion, the complaint must

allege each of the essential elements of a viable cause of action

and "contain sufficient factual matter, accepted as true, to

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state a claim to relief that is plausible on its face." Ashcroft

v. Iqbal, 556 U.S. 662, 678 (2009) (citation and internal

punctuation omitted).

The ground on which Silverstein moves for judgment on the

pleadings - res judicata - is an affirmative defense. See Fed.

R. Civ. P. 8(c)(1). And, as this court (Laplante, J.) recently

noted:

To grant a motion for judgment on the pleadings based on an affirmative defense, the facts establishing that defense must: (1) be definitively ascertainable from the complaint and other allowable sources of information, and (2) suffice to establish the affirmative defense with certitude. In ruling on such a motion, the court may consider not only the complaint itself, but also documents incorporated by reference into the complaint, matters of public record, and facts susceptible to judicial notice. This includes documents from prior state court adjudications.

Bosonetto v. Town of Richmond, 2013 WL 2404023, 2013 DNH 080

(D.N.H. May 31, 2013) (citations and internal punctuation

omitted).

Background

Accepting the allegations in Topek's Second Amended

Complaint (document no. 32-1) as true, the relevant facts are as

follows. Yankee Barn Homes ("Yankee") is a nationally-recognized

builder of custom-designed post and beam homes. It was founded

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in Massachusetts in 1969 and, in 1972, it relocated to Grantham,

New Hampshire. In 2011, it ran into financial difficulty and was

unable to pay its creditors, including its primary lender:

Woodsville Guaranty Savings Bank (the "Bank"). At the time,

Yankee owed the Bank approximately $2 million. The Bank's loans

to Yankee were secured by liens on, and security interests in,

virtually all of Yankee's assets, including its intellectual

property, trade names, design templates, and goodwill. The Bank

also held mortgage deeds to Yankee's real property.

Shortly after it began experiencing financial problems,

Yankee was contacted by Silverstein, which had recently purchased

another local company that specializes in the construction of

timber frame homes. In March of 2011, Yankee and Silverstein

signed a "letter of intent," essentially ceding control of Yankee

to Silverstein. But, when the Bank learned of the parties'

proposal, it refused to approve it (as, apparently, was its right

under the security instruments signed by Yankee) . Nevertheless,

Yankee and Silverstein moved ahead with their "deal" and entered

into an "Asset Purchase Agreement." Silverstein then began

integrating its operations with those of Yankee and began holding

itself out to the public as Yankee Barn Homes.

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The Bank was not amused. Despite the Bank's efforts to

obtain the return of what it considered misappropriated assets,

Silverstein continued to represent that it had purchased Yankee

and all of its assets. Because the Bank believed Silverstein's

actions were impairing the value of its security, it filed suit

against Silverstein in state court. Then, in September of 2011,

Yankee appears to have recognized that it could not follow

through on its "deal" with Silverstein absent Bank approval.

Accordingly, Yankee conveyed to the Bank all (or virtually all)

of its assets. See Bill of Sale from Yankee to the Bank

(document no. 32-9). Two days later, the Bank conveyed those

same assets - including all of Yankee's general intangibles such

as "copyrights, trademarks, and trade names, including the name

Yankee Barn Homes," as well as its existing inventory, machinery,

manufacturing eguipment, customer lists, computer records, phone

numbers, and ICC certifications - to Topek. See Bill of Sale

from the Bank to Topek (document no. 32-3). And, shortly

thereafter, Topek re-opened Yankee's Grantham facility and

rehired many of Yankee's former employees.

By November of 2011, Topek concluded that despite a state

court order directing Silverstein to stop doing so, Silverstein

continued to exercise (or attempt to exercise) control over

former assets of Yankee and, in so doing, was interfering with

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Topek's ownership of those assets. Accordingly, Topek intervened

in ongoing state court suits brought by the Bank against

Silverstein (collectively, the "280 Litigation").

Subseguently, as part of that ongoing 280 Litigation, the

state court held two days of evidentiary hearings on Topek's

motion for preliminary injunction. The court then made the

following factual findings:

On September 28, 2011, Yankee Barn Homes ("YBH") conveyed all of its real and personal property to Woodsville Guaranty Savings Bank ("the Bank"). Thereafter, on September 30, 2011, the Bank conveyed all former YBH fixed assets to Topek. Such fixed assets include inventory, machinery and eguipment, and general intangibles. While the parties dispute whether certain assets constitute former YBH property, the parties agree for purposes of this motion that the Bank sold to Topek any interest it held in YBH fixed assets.

Since September 2011, Topek has managed the Yankee Barn Homes's manufacturing facility in Grantham, N.H. Topek alleges, and the Court finds, that notwithstanding the sale of YBH assets to Topek, [Silverstein] has retained the phone numbers from the former Yankee Barn Homes and has represented itself to outside parties as "Yankee Barn Homes." Topek also claims, and the Court finds, that [Silverstein] has retained YBH property, has used YBH's ICC certifications, and has recently interfered with Topek's Facebook page by claiming copyright infringement of photos used by Topek of Yankee Barn Homes taken by Shane Godfrey. On November 21, 2011, Topek intervened in the actions pending between the Bank and WHS, Inc., and filed the present petition.

Order on Intervener's Petition for Preliminary Injunction

(document no. 1-1) at 2 (citations and internal punctuation

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omitted). Turning to Topek's request for injunctive relief, the

court entered the following findings:

The Court finds that Topek has demonstrated it is entitled to injunctive relief. First, Topek has demonstrated it will suffer irreparable harm if the injunction is not issued. Topek has offered evidence, unrebutted by [Silverstein], that [Silverstein] has used YBH phone numbers to "promote continuity" between YBH and [Silverstein]. Topek has also offered evidence, again unrebutted by [Silverstein], that [Silverstein] has retained certain YBH assets, used YBH ICC certifications, and claimed exclusive copyrights of YBH photos. The public is likely to confuse Topek -the owner of YBH assets - with [Silverstein], its competitor. The cumulative effect of [Silverstein's] conduct, then, is a loss of potential business to Topek. The Court finds that this loss constitutes irreparable harm.

Id. at 4. The court then enjoined Silverstein "from (A)

representing to anyone that [Silverstein] has purchased Yankee

Barn Homes or has any authority to act on behalf of Yankee Barn

Homes; and (B) from using or exerting any control over property

owned by Yankee Barn Homes, including, but not limited to, the

Yankee Barn Home website." Order of Grafton County Superior

Court (Jan. 5, 2012) (document no. 32-6). The court also ordered

Silverstein to turn over to Topek all of Yankee's property then

in its possession, including "customer lists, computer programs,

prints/plans or drawings."

Four days later Silverstein registered, with the State of

New Hampshire, a new company named "Yankee Post & Beam" - a name

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Topek claims is deceptively similar to Yankee Barn Homes.

Silverstein also began operating a website that, according to

Topek, was a virtual copy of the Yankee website (albeit with a

different URL).

Eventually, after being found in contempt of an earlier

court order and being reguired to pay nearly $30,000 in costs and

attorney's fees to the Bank, Silverstein settled the Bank's

claims against it. But, Topek's claims against Silverstein

remained unresolved. Topek then learned that Silverstein had

registered trademarks with the United States Patent and Trademark

Office, as well as the New Hampshire Secretary of State, that

Topek believed were confusingly similar to those it purchased

from Yankee. Accordingly, it sought to amend its complaint in

the pending state court action against Silverstein to include

trademark infringement and unfair competition claims under both

state and federal law. When that motion to amend was denied,

Topek filed a separate state court action against Silverstein

advancing those claims (the "440 Litigation").

Shortly thereafter, Silverstein and Topek settled their

disputes in the underlying 280 Litigation. Importantly, their

settlement agreement specifically provided that:

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9. This settlement agreement does not affect the parties' claims in Topek, LLC v. W.H. Silverstein, Inc., No. 215-2013-cv-440 pending in this court [i.e., the 440 Litigation].

10. All other claims in this case, except as set forth above, shall be dismissed with prejudice.

Settlement Stipulation (document no. 15-4) (emphasis supplied).

Two days later, Silverstein removed the 440 Litigation to this

court. Silverstein now claims that, despite language in the

settlement agreement seemingly to the contrary, that agreement

(along with the state court's order denying Topek's reguest to

amend its complaint in the 280 Litigation) bars the majority of

claims Topek seeks to pursue in this case.1

Discussion

I. Silverstein's Motion for Judgment on the Pleadings.

Silverstein moves for judgment on the pleadings as to counts

one through seven of the Second Amended Complaint, asserting that

those claims are barred by the doctrine of res judicata and the

rule against so-called "claim splitting." Alternatively, it

argues that the court should decline to exercise jurisdiction

1 In its Second Amended Complaint, Topek dropped claims relating to Silverstein's alleged improper website optimization, as well as a claim that Silverstein violated various state court orders. Accordingly, the court need not address whether those claims would have been precluded by the parties' settlement agreement in the 280 Litigation.

over Topek's trademark infringement claims (or, at a minimum,

stay this proceeding) because similar claims are already pending

before the Trademark Trial and Appeal Board ("TTAB").

Under New Hampshire law, the doctrine of res judicata

precludes the relitigation of:

matters actually decided, and matters that could have been litigated, in an earlier action between the same parties for the same cause of action. For the doctrine to apply, three elements must be met: (1) the parties must be the same or in privity with one another; (2) the same cause of action must be before the court in both instances; and (3) a final judgment on the merits must have been rendered in the first action.

Brooks v. Trustees of Dartmouth College, 161 N.H. 685, 690

(2011). It is the third element - a final judgment on the merits

- that is at issue here.

According to Silverstein, when the state court denied

Topek's motion to amend its complaint (to add the trademark and

unfair competition claims that now form the basis of this action)

and Topek did not appeal that ruling, the order became final, on

the merits, and was with prejudice. See Silverstein's Memorandum

(document no. 22-1) at 13. And, says Silverstein, under the

doctrine of res judicata, that ruling serves to preclude Topek

from litigating in this forum any claims that were the subject of

the motion to amend. In support of that position, Silverstein

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points to a recent decision of the Court of Appeals for the First

Circuit, in which the court noted:

It is axiomatic that claim preclusion doctrine requires a party to live with its strategic choices. Those strategic choices include whether to attempt to amend a complaint and whether to appeal a denial of such an attempt. When a party chooses to move for leave to amend its complaint and then not to appeal denial of that motion, the party is not entitled to a second opportunity in a later action to litigate the claim that the party sought to add. Instead, the party's recourse is to appeal, not to start a new action.

Hatch v. Trail King Indus., 699 F.3d 38, 45 (1st Cir. 2012)

(citations and internal punctuation omitted) (emphasis supplied).

There is, however, a critical distinction between the facts nn

this case and those in the Hatch case. Following ghe denial of

plaintiff's motion to amend the complaint, the Hatch case

proceeded to a final decision on the merits (a jury verdict) - a

decision that was affirmed on appeal. See Id. at 47.

Here, however, the was no judicial resolution of the claims

between Topek and Silverstein, and Topek never had the

opportunity (or the need) to appeal the trial court's denial of

its motion to amend. Rather, the parties resolved their disputes

short of any judicial declaration of their rights and

responsibilities, and the parties have offered nothing in this

record suggesting that the settlement agreement was entered as an

order of the court, a consent decree, or the like.

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Of course, there are circumstances in which a settlement

agreement can have a preclusive effect on a party's ability to

pursue subsequent litigation on the same or related claims. For

example, in discussing the doctrine of res judicata as applied to

a consent judgment, the court of appeals for this circuit has

observed that:

When a dispute of law exists between parties to a case and they agree to a settlement of that dispute and entry of a judgment with prejudice based on that settlement, then the terms of that judgment in relation to that legal issue are subject to res judicata principles. A judgment that is entered with prejudice under the terms of a settlement, whether by stipulated dismissal, a consent judgment, or a confession of judgment, is not subject to collateral attack by a party or a person in privity, and it bars a second suit on the same claim or cause of action. Such a judgment has the force of res judicata until further order of that or a higher court modifying that consent judgment.

Langton v. Hogan, 71 F.3d 930, 935 (1st Cir. 1995) (citations

omitted) (emphasis supplied). See also Bews v. Town of Carroll,

2009 WL 1664064, 2009 DNH 083 (D.N.H. June 15, 2009) (noting that

the court "must examine the language of the stipulation [of

dismissal] to discern whether the parties intended the document

to be a final resolution of all matters that could have been

litigated in the enforcement action.").

As noted above, however, this case presents a different fact

pattern. Silverstein might well be heard to assert that a

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settlement agreement precludes any further litigation of the

claims actually resolved by that agreement. But it cannot

credibly argue that the settlement agreement in this case

precludes further litigation of claims that the parties

specifically and expressly agreed were unaffected by the their

settlement. See generally Settlement Stipulation at paras. 9 and

10 (providing that the settlement agreement "does not affect the

parties' claims in [the litigation presently pending in this

court]" and noting that all other claims between the parties,

"except as set forth above, shall be dismissed with prejudice.").

Silverstein plainly understood (and certainly objectively

manifested its intent) that the parties' settlement agreement

would not have any preclusive effect on the claims Topek is

presently pursing in this court. And, it is guite clear that

under the circumstances, Silverstein is eguitably estopped from

asserting that the agreement should be understood as barring the

"unaffected" claims on res judicata grounds. See, e.g., Ramirez-

Carlo v. United States, 496 F.3d 41, 49-50 (1st Cir. 2007). See

generally Restatement (Second) of Torts, § 894 (1979) ("Eguitable

Estoppel as a Defense").

As for Silverstein's assertion that the court should either

decline to exercise jurisdiction over Topek's claims or, in the

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alternative, stay this proceeding pending the outcome of related

proceedings before the Trademark Trial and Appeal Board, the

court declines that invitation. Silverstein has failed to

demonstrate that adoption of either alternative would be

appropriate in this case. See, e.g., Goya Foods, Inc. v.

Tropicana Prods., Inc., 846 F.2d 848 (2d Cir. 1988) (discussing

the primary jurisdiction doctrine in the field of trademark law

and explaining why the existence of an action before the TTAB

does not warrant a stay of related judicial proceedings). See

also Calista Enterprises Ltd. v. Tenza Trading Ltd., 2013 WL

6080184 (D. Or. Nov. 19, 2013) (denying a motion to stay a

federal action pending resolution of a related Petition for

Cancellation before the TTAB); Exclusive Supplements, Inc. v.

Abdelgawad, 2013 WL 160275 (W.D. Pa. Jan. 15, 2013) (same).

II. Silverstein's Motion for Partial Summary Judgment.

Next, Silverstein moves for summary judgment on Topek's

claim of copyright infringement (count 8 of the Second Amended

Complaint). In that count, Topek alleges that it owns, and

Silverstein has infringed, copyrighted "Wall and Roof Shop

Drawings and Details." Silverstein responds that Topek is not

the owner of the claimed copyright and, therefore, asserts that

it is entitled to judgment as a matter of law on that

infringement claim. More specifically, Silverstein claims that

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Topek's predecessor in title (the Bank) never acquired title to

the disputed copyrighted material. It necessarily follows, says

Silverstein, that Topek could not have acquired title to that

work from the Bank:

The Bank to Topek Bill of Sale has a summary recital conveying "all copyrights . . . held by Yankee Barn Homes, Inc.," but does not list the copyright at issue here.

The Bank obtained the enumerated assets of Yankee Barn Homes, Inc. in a Bill of Sale dated September 28, 2011, conveying to the Bank "registered copyrights and unregistered copyrighted materials, all as further identified on Exhibit A-l attached hereto and made a part hereof." That Exhibit A-l identifies some 24 registered copyrights and 34 unregistered copyrights, but not the purported copyright at issue here.

Silverstein's Memorandum (document no. 33-1) at 3.

For its part, Topek seems to acknowledge that the

copyrighted material at issue in this case was not specifically

listed in the conveyance from Yankee to the Bank, or the

conveyance from the Bank to Topek. But, says Topek, the plain

and unambiguous intent of all interested parties was to convey

all of Yankee's intellectual property - including all copyrighted

works - from Yankee to the Bank, and then from the Bank to Topek.

The court is inclined to agree. See generally Bill of Sale from

Yankee to the Bank (document no. 32-9) and Bill of Sale from the

Bank to Topek (document no. 32-3). In the absence of dispositive

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contrary evidence from Silverstein, whether Topek actually took

title to the copyrighted material at issue is a genuinely

disputed material fact, likely to turn on contract principles.

Conseguently, Silverstein's motion for judgment as a matter of

law must necessarily be denied.

III. Silverstein's Motion for Preliminary Injunction.

Finally, Silverstein advances two counterclaims against

Topek: a false advertising claim under the Lanham Act, and a

false advertising/unfair competition claim under New Hampshire's

Consumer Protection Act. In short, Silverstein alleges that

while Topek may have purchased the assets formerly owned by

Yankee Barn Homes, Topek did not buy the company (it did not

acguire its stock) and, therefore, Topek is not the "successor in

interest" to Yankee Barn Homes. Accordingly, says Silverstein,

Topek cannot lawfully hold itself out to the public as "Yankee

Barn Homes," or say that it has been in business since 1969, or

claim that it has built award-winning homes throughout the

country, or display pictures of homes that it never actually

built, or display testimonials from clients who purchased their

homes from what Silverstein considers to be the "true" Yankee

Barn Homes. See Silverstein's Memorandum (document no. 31-1) at

9 ("[T]he truth is that Topek has no connection whatsoever to

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[Yankee Barn Homes]. These advertising statements are false,

misleading and deliberately deceptive.") (emphasis in original).

Silverstein seeks a preliminary injunction that would, inter

alia, prohibit Topek from: representing that it has been in

business since 1969; stating that it has "any relationship to

Yankee Barn Homes, Inc."; and making any reference in its

advertising to Yankee Barn Homes, Inc., the awards won by Yankee

Barn Homes, Inc., the founders of that company, or the homes

built by that company. See Silverstein's Memorandum (document

no. 31-1) at 14. Topek objects.

In support of its reguest for preliminary injunctive relief,

Silverstein relies upon this court's opinion in Paper Thermometer

Co. v. Murray, 2012 WL 194369, 2012 DNH 017 (D.N.H. Jan. 23,

2012). That case is, however, factually distinguishable and

provides no support for Silverstein's position. Paper

Thermometer involved a defendant who purchased plaintiff's goods,

re-labeled them, represented to the public that it (rather than

plaintiff) had engineered and manufactured them, and then sold

those products as its own. The defendant in that case had not

purchased the assets of the plaintiff corporation; it did not own

the intellectual property of the plaintiff corporation; it did

not have the right to use trademarks registered by the plaintiff

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corporation; it was not employing plaintiff's former workforce to

manufacture the goods in guestion; and it had no legal

justification for its challenged practices. Little more need be

said. As presented, Silverstein's argument is unpersuasive.

For its part, Topek has embarked on an entirely different

track. It alleges that its purchase of virtually all of the

assets of Yankee Barn Homes resulted in a "de facto merger" of

the companies, thereby making Topek the "successor-in-interest"

to Yankee Barn Homes and vesting it with authority to hold itself

out to the public as Yankee Barn Homes. In support of that

position, it cites several cases in which creditors sought to

impose liability upon an entity that purchased the assets of a

debtor corporation. In those cases, creditors claimed the

purchasing entity became the "successor" to the debtor

corporation and, therefore, was legally responsible for its

financial obligations. See, e.g., Kleen Laundry & Dry Cleaning

Servs. v. Total Waste Mgmt., 817 F. Supp. 225 (D.N.H. 1993);

Bielagus v. EMRE of New Hampshire Corp, 149 N.H. 635 (2003).

Topek seems to argue by analogy that if the conditions are met to

hold Topek liable for the financial obligations of Yankee Barn

Homes, Inc. (under what is known as the "substantial continuation

theory"), there must have been a "de facto merger" and Topek

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necessarily has the legal authority to hold itself out to the

public as Yankee Barn Homes.

While Topek's argument is clever and, perhaps, even

superficially appealing, it is not terribly persuasive either.

As Silverstein points out, Topek has failed to point to any

authority embracing such a theory in factual circumstances

similar to these. Rather, the cases on which Topek relies simply

address the circumstances under which the purchaser of a debtor

corporation's assets (rather than its stock) can yet be held

accountable for the debtor corporation's liabilities. Not a

single case cited by Topek addresses the guestion actually

presented here: whether Topek has the legal authority to hold

itself out to the public as "Yankee Barn Homes." Or, stated

slightly differently, whether Topek has the right to hold itself

out to the public as Yankee Barn Homes to draw on its

(apparently) noble and storied history, and to claim to

manufacture the same high-guality homes today that Yankee Barn

produced for many years.

While neither party has directly addressed the relevant

legal and factual issues, a leading and respected treatise

undermines Silverstein's contention that Topek has engaged in

unfair, deceptive, and unlawful trade practices by, for example.

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representing to the public that Yankee Barn Homes remains in

business, as it has since 1969.

It is patently misleading to advertise a false date of establishment or to suggest, without warrant, that the reputation of a newly established business is well-known to the public. Reference to an early date of establishment suggests that the business is an experienced, firmly established, successful and reliable concern. Therefore, the dispositive guestion in any case is whether the business enterprise, as a unit, including all its human elements and its corporeal and incorporeal values, has continued, substantially unchanged, since its inception

It is difficult to determine what changes in business status break the continuity of the founder's reputation. It is not interrupted by every minor change in the nature of the business: e.g., its development from a small craft shop to a big industrial unit; a change in its legal form, e.g., from individual ownership to a partnership or corporation; a change of firm name or trademark; a change of ownership; expansion to other lines of business; bankruptcy; or the transfer of the old business to a new corporation. The continuity of a business is often evidenced by retention of the old firm name or trademark, even if it contained the name of an individual owner. Such names normally lose their personal significance, and metamorphose into business designations.

Such continuity, however, may be broken by the removal of the business to another country, by its conversion to an entirely different product line, or by its division into several parts transferred to different successors.

3 R. Callman, Callman on Unfair Competition, Trademarks &

Monopolies, § 5:35 at 189-90 (Louis Altman, ed., 4th ed. 1981 &

2013 supp.) (footnotes omitted) (emphasis supplied).

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Silverstein does not allege that any of the factors

suggestive of a break in business continuity are present in this

case. On the other hand, several of the factors that suggest

unbroken business continuity are obviously present in this case.

As noted above, Topek purchased all (or virtually all) of the

tangible and intangible assets of Yankee Barn Homes, Inc. The

list of those assets is lengthy and it includes, for example, a

number of second-level Internet domain names (e.g.,

"yankeebarnhomes.com," "yankeebarnhomes.org," and

"yankeebarnhomes.us.com") and numerous registered copyrights

(e.g., "Yankee Barn Homes dormer details," and "Yankee Barn Homes

horsebarn/garage options"). Topek also purchased Yankee's

registered trademarks and service marks (including, for example,

"Yankee Barn"), as well as the goodwill and reputation for

guality associated with those marks. See 15 U.S.C. § 1060(a)(2)

("In any assignment authorized by this section, it shall not be

necessary to include the good will of the business connected with

the use of and symbolized by any other mark used in the business

or by the name or style under which the business is conducted.").

See generally 1 J. McCarthy, McCarthy on Trademarks and Unfair

Competition, §§ 2:3-2.10 (4th ed. 2011); Restatement (Third) of

Unfair Competition, §§ 1-9 (1995) ("Deceptive Marketing").

Additionally, Topek is operating the very same manufacturing

facility in Grantham, New Hampshire, from which Yankee Barn Homes

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has operated since 1972. And, it has rehired much of Yankee's

former workforce.

Given what appears to be the controlling law on this issue,

and in light of all that Topek purchased from Yankee Barn Homes

(albeit through the Bank), a challenge to Topek's right to hold

itself out to the public as the Yankee Barn business that moved

to Grantham in 1972 and has, for many years, manufactured unigue

and highly regarded post and beam homes, would seem unlikely to

succeed. But neither party has directly (or adeguatel))

addressed the relevant and dispositive legal and factual issues.

Silverstein bears the burden here. And, it has failed to

demonstrate that Topek's alleged conduct violates either the

Lanham Act or New Hampshire's Consumer Protection Act.

Conseguently, it has not shown that it is likely to prevail on

the merits of its counterclaims so its motion for preliminary

injunction is denied.

Conclusion

For the foregoing reasons, the court rules as follows on the

pending motions:

1. Topek's Motion to Amend the First Amended Complaint (document no. 32) is granted.

2. Silverstein's Motion for Judgment on the Pleadings (document no. 22) is denied.

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3. Silverstein's Motion for Preliminary Injunction (document no. 31) is denied.

4. Silverstein's Motion for Summary Judgment on Count 8 of the Second Amended Complaint (document no. 33) is denied.

SO ORDERED.

^^4^ McAul:ffe

^Ulited States District Judge

March 20, 2 014

cc: Gary E. Lambert, Esq. W. E. Whittington, Esq.

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